DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
The instant application is a 371 of PCT/FI2020/050749 filed on 11/13/2020, which claims foreign priority to Finland application no. FI20195993 filed on 11/20/2019. The certified copy of the foreign
priority application filed on 05/19/2022 is acknowledged.
Status of the Claims
The claim amendments and remarks filed on 04/23/2026 is acknowledged. Claim 9 is amended.
Accordingly, claims 1-19 are pending and being examined on the merits herein.
Withdrawn Rejections
The 35 USC 103 rejection over Saxell in view of Paunonen, Miner, Ennenbach, and as evidenced by Balkissoon for claims 1-2, 7-14, and 19 are withdrawn for reasons as discussed in the allowable subject matter section below.
The 35 USC 103 rejection over Saxell in view of Paunonen, Miner, Ennenbach, and as evidenced by Balkissoon, and further in view of Taikka for claims 3 and 15 are withdrawn for reasons as discussed in the allowable subject matter section below.
The 35 USC 103 rejection over Saxell in view of Paunonen, Miner, Ennenbach, and as evidenced by Balkissoon, and further in view of Appel for claims 4-5 and 16-17 are withdrawn for reasons as discussed in the allowable subject matter section below.
The 35 USC 103 rejection over Saxell in view of Paunonen, Miner, Ennenbach, and as evidenced by Balkissoon, and further in view of Castro for claims 6 and 18 are withdrawn for reasons as discussed in the allowable subject matter section below.
The following grounds of rejection are maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,584,804 (‘804) in view of Saxell et al. (US20170145119A1 in PTO-892 dated 05/16/2025).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘804 recites “A method for controlling discharges of nitrogen compounds while producing cellulose carbamate, the method comprising: microcrystalline cellulose is produced from chemical pulp produced at a pulp mill as the chemical pulp is subjected to acid hydrolysis to form the microcrystalline cellulose and hydrolysate, and reacting the microcrystalline cellulose with urea to produce cellulose carbamate during which ammonia is released, wherein the microcrystalline cellulose production and the cellulose carbamate production are integrated to the pulp mill having a flue gas system that handles flue gases, wherein carbon dioxide from flue gases is reacted with the released ammonia to produce the urea, which is used in the carbamate production”. Claim 7 of ‘804 recites “wherein the chemical pulp is a bleach fibrous cellulosic wood pulp”. Claim 2 of ‘804 recites “The method according to claim 1, wherein the flue gas system is attached to a lime kiln, and the carbon dioxide is obtained from flue gases produced in the lime kiln.” Claim 3 of ‘804 recites “The method according to claim 1, wherein the released ammonia is used to neutralize hydrolysate and/or acidic wastewater from the production of the microcrystalline cellulose.”. Claims 13 and 14 of ‘804 recite “comprising feeding at least a portion of nitrogen containing wastewater from the production of the cellulose carbamate to an evaporation plant which concentrates the nitrogen containing wastewater to produce dry nitrogen fertilizers” and “conveying nitrogen-containing wastewater from the production of the cellulose carbamate to a wastewater treatment plant of the pulp mill to be used as nutrient”.
The difference between the claims of ‘804 and the claimed invention is that the claims of ‘804 does not recite a dissolving pulp or kraft pulp and an activating step to decrease degree of polymerization of the dissolving or kraft pulp.
Saxell et al. discloses a method for manufacturing cellulose carbamate (CCA) (see Abstract). Saxell et al. discloses that the method comprises of a) providing a never-dried pulp, b) adding urea and mixing said pulp with said urea, c) mechanically treating said mixture, d) drying the mixture, and e) heating the relatively dry mixture, thus providing a cellulose carbamate. (see paragraphs 0016-0020). Saxell et al. discloses that the never-dried pulp may be a chemical pulp or kraft pulp (see paragraph 0028). Saxell et al. discloses the pulp is preferably a dissolved type and derived from hardwood or softwood such as pine, spruce, cedar, etc. (see paragraph 0029). Saxell et al. also exemplifies that the pulp in their method was taken directly from a pulp mill (see Example 1, paragraph 0070). Saxell et al. discloses that an auxiliary agent such as an alkaline metal hydroxide, ammonia, or hydrogen peroxide may be added to the pulp to decrease the degree of polymerization (see paragraph 0035), and that this auxiliary agent may be added before urea or at the same time with urea or after urea (see paragraph 0063). Saxell et al. discloses that ammonia gases were produced and removed from a reactor after the addition of hydrogen peroxide and urea to the pulp (see paragraph 0071-0072). Saxell et al. discloses that their CCA production is efficient and reduces washing and waste water treatment (see paragraph 0056).
It would have been prima facie obvious to combine the claims of ‘804 and Saxell et al. by substituting the microcrystalline cellulose recited in the claims of ‘804 with a dissolved or kraft pulp as disclosed in Saxell et al. and further substituting the acid hydrolysis step with the addition of an auxiliary agent such as hydrogen peroxide to decrease the degree of polymerization to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to make this modification with a reasonable expectation of success because Saxell et al. discloses that their cellulose carbamate production method is efficient and reduces washing and waste water treatment.
Response to Arguments
Applicant' s arguments filed on 04/23/2026 have been fully considered but were not persuasive.
Applicant traverses the non-statutory double patenting rejection over US’804 on the basis that the US’804 patent itself does not anticipate or render obvious any of the instant claims and that relying on the teachings of Saxell effectively acknowledges that the claims of the instant application are patentable distinct from the US’804 patent.
This argument was not found persuasive because as stated in MPEP 804 B 3., “A nonstatutory double patenting rejection, if not based on an anticipation rationale or an "unjustified timewise extension" rationale, is "analogous to [a failure to meet] the nonobviousness requirement of 35 U.S.C. 103 " except that the patent disclosure principally underlying the double patenting rejection is not considered prior art” and “Any secondary reference used to support an obviousness analysis for a nonstatutory double patenting rejection must be prior art under 35 U.S.C. 102 or pre-AIA 35 U.S.C. 102”.
Therefore, the secondary reference Saxell, which qualifies as prior art, is used to establish obviousness for the non-statutory double patenting between the instant application and US’804 as discussed above.
Applicant states that the non-statutory double patenting rejection is improper because the instant application and Saxell do not share inventors, applicants, or assignees.
This argument was not found persuasive because the non-statutory double patenting exists between US’804 and the instant application. Saxell was used as a secondary prior art reference to establish obviousness between US’804 and the instant application and not as the reference application. Furthermore, US’804 shares the same assignee and inventors. Therefore, the non-statutory double patenting rejection over US’804 is proper and maintained.
It is noted that a Terminal Disclaimer over US’804 that is filed and approved can overcome this non-statutory double patenting rejection. See MPEP 804.02 II.
Allowable Subject Mater
Claims 1-19 are rejected, but would be allowable if the nonstatutory double patenting rejection over US’804 is overcome.
The closest prior art is Saxell et al. (US20170145119A1 in PTO-892 dated 05/16/2025)
While Saxell discloses a method of producing cellulose carbamate (CCA) by treating kraft or dissolved pulp using urea and also that ammonia is released as a by-product, Saxell does not disclose the CCA process is integrated into a pulp mill having a flue gas system such that carbon dioxide from the flue gas is reacted with the released ammonia to produce the urea used in the carbamate production.
Paunonen (Journal of Cleaner Production, June 2019 in PTO-892 dated 05/16/2025) discloses methods of reducing the environmental impact of cellulose carbamate fiber production using recycled cotton textiles and discloses the integration of a pulp mill in a CCA product and suggests recycling the formed ammonia back into the process as urea (see page 873, right column second to paragraph and Figure 2 on page 874).
However, the teachings of Paunonen do not provide further guidance of how the ammonia is added back into the process as urea. Furthermore, the teachings of Paunonen disclose the recycling of an entirely different material to produce the cellulose carbamate and further discloses that their processes including a drying step (see Fig. 1), whereas the teachings of Saxell use wood-based pulp that is never dried. Additionally, Saxell further teaches away from the use of dried pulp materials in their cellulose carbamate process because Saxell discloses that dried pulp materials have a major drawback of needing high urea dosages that results in inefficient chemical mixing and poor conversion of urea to carbamate groups (paragraph 0010) and that a pulp that is never dried results in significantly increased reaction efficiency with smaller urea dosages (paragraph 0079).
Furthermore, the prior art also does not provide any additional guidance or suggestions to integrate a flue gas system into a pulp mill to capture carbon dioxide and further react the carbon dioxide with the released ammonia from a CCA process to form the required urea.
Miner (Energy, 2002 in PTO-892 dated 05/16/2025) only discloses that lime kiln kraft pulp mills emit carbon dioxide (Abstract) and further discloses chemical recycling processes in the pulp mill to recover kraft pulping chemicals ((see first two paragraphs under section “Summary” on page 736 and Fig. 1 on page 731). However, Miner does not teach or suggest the capture of the emitted carbon dioxide using a flue gas system to further react with released ammonia to produce the urea for use in the CCA process.
Ennenbach (EP2617708A1 in IDS filed on 05/19/2022) discloses a method of forming urea by integration of an ammonia production process with that of a urea production process (see Abstract). Ennenbach et al. further discloses that their method of forming urea comprises obtaining ammonia and carbon dioxide from synthetic gas that is formed during steam reforming or gasification in connection with an ammonia production process (paragraph 0008). However, the ammonia production process disclosed in Ennenbach is referring to a production plant that involve combustion of a feedstock such as natural gas, oils, or hydrocarbons that produces a flue gas and syngas (paragraph 0042). Ennenbach discloses that the flue gas is further processed to capture the carbon dioxide, and the syngas is reacted with nitrogen in the air to form the ammonia (paragraph 0042).
Therefore, the teachings of Ennenbach are in a different field of endeavor and is not reasonably pertinent to the problem faced by the inventor because the flue gas containing carbon dioxide in Ennenbach is produced from an entirely material (natural gas, oil, hydrocarbons) and process. Furthermore, the ammonia in Ennechbach is also produced from an entirely different process that involves converting syngas emission using nitrogen in the air, whereas the cellulose carbamate process releases ammonia directly as a byproduct. Therefore, the ordinary skilled artisan would not have a reasonable expectation of success in integrating the urea making process in Ennenbach for the CCA processes as disclosed in Saxell or Paunonen.
Conclusion
No claim is found allowable.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/D.H.C./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner
Art Unit 1693
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